INTERNATIONAL REGISTRATION OF MARKS THROUGH MADRID SYSTEM

Date Submitted: 05/05/2022 02:40 PM

Register Your Trademark Internationally

If you sell or promote goods in another country, it is advisable to register your trademark in that country. Otherwise, you could lose your trademark rights in that country or potentially infringe another’s registered trademark.

There are two ways you can register your trademark overseas: File an international application through the Madrid System, or File directly application into the country that you wish your trademark to be protected.

Benefits of International Trademark Registration under Madrid System

The Madrid System is the one-stop solution for trademark owners to obtain and maintain trademark protection in multi teritories. Trademark owners can submit one application in one language and pay in one currency for their trademark protection in multi teritories (up to 124 countries). The trademark owners can easily extend their trademark protection to new markets at a later date.

The Madrid System also simplifies the management of trademark. All changes or renewals of the international registration can be recorded directly, without making those changes or renewals in each country of registration. In general, the Madrid System can help trademark owners manage their trademarks efficiently.

International Trademark Search

Before filing an international application through the Madrid System, we will help you to conduct a search to sure that your trademark is not identical or similar to the prior registered/filed trademarks in your target markets. Also, the search result may show whether your trademark or a part of your trademark appears as generic or descriptive wording in other registrations.

International Trademark Registration through Madrid System

Our attorneys will prepare and submit your international trademark application to Intellectual Property Office of Viet Nam (IPVN). IPVN will certify the application and forward the application to World Intellectual Property Organization (WIPO).

International Trademark Registration Process (Flowchart – www.wipo.int)

Stage 1 – Application through your National or Regional IP Office (Office of origin)

Before you can file an international application, you need to have already registered, or have filed an application, in your “home” IP office. The registration or application is known as the basic mark. You then need to submit your international application through this same IP Office, which will certify and forward it to WIPO.

Stage 2 – Formal examination by WIPO

WIPO only conducts a formal examination of your international application. Once approved, your mark is recorded in the International Register and published in the WIPO Gazette of International Marks. WIPO will then send you a certificate of your international registration and notify the IP Offices in all the territories where you wish to have your mark protected.

Stage 3 – Substantive examination by National or Regional IP Offices (Office of the designated Contracting Party)

The IP Offices of the territories where you want to protect your mark will make a decision within the applicable time limit (12 or 18 months) in accordance with their legislation. WIPO will record the decisions of the IP Offices in the International Register and then notify you.

Our Attorneys will regularly check and keep you informed of the status of filing, formality acceptance, publication of application, substantive examination and registration, plus a scanned copy of related documents.